The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Ninh Van Thanh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on October 4, 2019. On October 3, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On October 4, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Japanese, of the Complaint, and the proceedings commenced on October 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2019. On October 21, 2019, the Center received an email communication in English from the Respondent, in which it requested Vietnamese as the language of the proceeding. No formal Response was filed with the Center. On November 6, 2019, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Teruo Kato as the sole panelist in this matter on November 25, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background According to the Complainant, the Complainant, Philip Morris Products S.A., is a company which is part of the group of companies affiliated to Philip Morris International Inc., one of the leading international tobacco companies, with products sold in approximately 180 countries. The Complainant’s portfolio includes certain products branded as “IQOS System” first launched in Japan in 2014, which is “available in key cities in around 44 markets across the world”. The Complainant owns, inter alia, International trademark IQOS (word) No. 1218246, registered on July 10, 2014, International trademark IQOS (device) No. 1329691, registered on August 10, 2016, and International trademark (device) No. 1331054, registered on October 11, 2016, as set out in section 6.2 A below. The disputed domain name The Respondent is Ninh Van Thanh, whose address is given as being in Viet Nam. According to the Complainant, the website at the disputed domain name “is linked to an online shop […] allegedly offering the Complainant’s IQOS System, as well as competing third party products of other commercial origin”. The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it is the owner of various trademarks including IQOS. The Complainant also contends that the disputed domain name reproduces the IQOS trademark in its entirety, in addition to the non-distinctive and descriptive word “tobacco” and that the disputed domain name is confusingly similar to the Complainant’s IQOS trademark. The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark IQOS, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name. The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent Except for its email communication of October 21, 2019 regarding the language of the proceeding, the Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding A. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese. The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese was made the language of the proceeding, it would cause an unnecessary burden to the Complainant and unnecessarily delay the proceedings. The Panel notes that information of these proceedings was given to the Respondent both in English and Japanese and that the Respondent sent a reply in English stating that “I am Vietnamese, I need someone who can speak Vietnamese to understand email content”, but otherwise no communication was received from the Respondent. Further, the Panel notes that the disputed domain name is composed of Latin characters only. Therefore, the Panel finds that the Respondent is able to communicate in English. Moreover, as confirmed by the Registrar, the language of the Registration Agreement is in Japanese. The Panel would have accepted a Response in Japanese, but none was filed. In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English will be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark. The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of IQOS registered trademarks, including inter alia: - International trademark IQOS (word) No. 1218246, registered on July 10, 2014, designating multiple jurisdictions, including Viet Nam, covering goods and services in classes 9, 11 and 34; - International trademark IQOS (device) No. 1329691, registered on August 10, 2016, designating multiple jurisdictions, including Japan and Viet Nam, covering goods and services in classes 9, 11 and 34; and - International trademark (device) No. 1331054, registered on October 11, 2016, designating multiple jurisdictions, including Japan and Viet Nam, covering goods and services in classes 9 and 34. As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the IQOS trademark in which the Complainant has rights. Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case. Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark IQOS and the term “tobacco”. The Panel finds that that the recognizable element of the disputed domain name is the term “iqos”, which is identical to the Complainant’s trademark. It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of common terms does not prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou,WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen,WIPO Case No. D2014-1123; and Salvatore Ferragamo S.p.A. v. Wei Huan,WIPO Case No. D2014-1290). The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant contends that “the Respondent lacks any right or legitimate interest in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark (or a domain name which will be associated with this trademark)”, and that “[t]he Respondent is not making a legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant”. The Complainant submitted to the Panel documentary materials to support its contentions as above and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. In order to assess whether the Respondent registered and is using the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following: (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on that website or location. The Panel notes and accepts that the trademark IQOS was registered and extensively used internationally, including in Japan and Viet Nam, before the disputed domain name was registered on August 26, 2019. Therefore, the Panel holds that the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. As to the use in bad faith, the Complainant contends, among others, that “[t]he Respondent started offering the Complainant’s IQOS System immediately after registering the Disputed Domain Name. […] The term IQOS is not commonly used to refer to tobacco products. It is therefore beyond the realm of reasonable coincidence that the Respondent chose the Disputed Domain Name, without the intention of invoking a misleading association with the Complainant”. The Complainant further contends, among others, that “the Respondent is not only using the Complainant’s IQOS trademark for the purposes of offering for sale the IQOS System, but also for purposes of offering for sale competing products of other commercial origin. Such abusive use of the Complainant’s IQOS trademark for purposes of promoting competing products is a clear-cut trademark infringement and constitutes clear evidence of the Respondent’s bad faith”. The Complainant submitted materials to support such contentions, including “Print-outs of the Website” at the disputed domain name which were dated September 18, 2019. The Respondent was given an opportunity to raise its objection to the contentions made by the Complainant but has not done so. Under the circumstances, the Panel considers such use to amount to bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy. In the premises, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the third requirement of the Policy has been met. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Teruo Kato
Sole Panelist
Date: December 3, 2019
Full & Egal Universal Law Academy